easyMobile and Orange head into court

After months of bickering and attempted negotiation, France Telecom’s Orange has finally lost patience and issued proceedings against easyGroup and its use of orange for the competing easyMobile brand. But isn’t orange easy’s corporate colour?

Topic: Brands

Who: Mobile Phone Operators – easyMobile and Orange

Where: London

When: November 2006

What happened:

A recent dispute between easyGroup and Orange is set to be heading for the courts at the end of November.

Orange has alleged that the use of the colour orange in the branding of easyMobile, the low-cost mobile phone service which is part of easyGroup, will provoke confusion in the market and has apparently issued proceedings against easyGroup for trade mark infringement and passing off.

Orange, which is owned by France Telecom, has been involved in the mobile phone market for over a decade. easyMobile are relative newcomers to the market and only launched their service on 2004. They have recently struck a deal with The Link chain of high street stores to sell their products, despite planning to only sell online initially. Currently, they have around 15,000 users.

Although both companies had previously made use of the colour orange in branding and advertising, this is the first time that both have used the same colour in the "telecommunication products and services" arena.

As long ago as 1995, Orange registered a shade of the colour orange (pantone no. 151 under the international classification system) in the UK for goods and services which include "telecoms services, telephones and pagers".

Both companies have been in negotiations for several months in hope of reaching an amicable solution, but talks have broken down leaving it up to the courts to decide.

The owner of easyGroup, Stelios Haji-Ioannou, has made bullish comments on his company's website, stating, "I will see them in court. It is our right to use our own corporate colour for which we have become famous during the last 10 years…their suggestion that we are trying to 'pass off' as them is laughable."

Why this matters

This dispute reopens the question as to whether it is possible to register a colour as a trade mark.

In the United States, the Lanham Act permits the registration of a trade mark that consists purely and simply of colour (Qualitex Co. v Jacobson Product Co. Inc.).

The situation in Europe is clearly explained in the case of Libertel Groep BV v Benelux Markenbureau. The ECJ ruled here that the registration of a mark would be possible if the colour could be defined by a recognised identification code (such as the pantone numbering system) and provided that the mark could be graphically presented in a clear precise and durable manner.

In the UK, there have been several examples of colours being successfully registered – Cadburys (purple – pantone number 2685C) and the AA (yellow – pantone number 109) are just two of many.

Significantly, in BP Amoco plc v Kelly, BP, the oil company, successfully defended their registered mark (green – pantone number 348C) against a rival petrol retailer who used the colour green, claiming that there would be an element of confusion in the mind of the consumer.

In the easyMobile/Orange dispute, it remains to be seen whether or not Orange will be successful in policing their branding.

To be successful in a "passing off" Orange they would have to prove (i) that they have built up a reputation/goodwill in the business carried on in the mobile telecommunications market using the colour orange, and (ii) that easyMobile's use of a similar colour is likely to cause damaging confusion amongst potential customers.

On the issue of trade mark infringement, since easyGroup applied in 2003 to register a shade of orange with a different pantone number (21) to Orange's (though not for telecommunications services and the application was later withdrawn) it is a reasonably safe assumption that the protagonists' shades of orange are not exactly the same.

The effect of this is that to win in court on trade mark infringement, Orange will have to establish that the colours are "similar" and so similar that there exists a likelihood of confusion on the part of the public, including a likelihood of association. From here, the Orange case looks strong, but marketing litigation seems more unpredictable than most.

What is certain is that the case will attract huge amounts of publicity as two high profile companies come to blows in November.